Not Your Typical Trademark

Sights, sounds, smells, and more.  Trademarks in Canada can now appeal to all your senses and take many different forms.

The purpose of a trademark is to indicate the source of a product or service.  Typically, when we think about trademarks, we think of words and logos.  But what about the smell of a Subway restaurant?  Or that familiar McDonald’s jingle?  Or that shade of purple we associate with Cadbury chocolate bars?  As of June 2019, all these source-indicators can be trademarked in Canada, too.

Non-Traditional Trademarks

When Canada joined the Madrid Protocol in June 2019, trademark law in Canada changed to better align with other countries’ laws.  One change to Canada’s Trademarks Act expanded what types of “non-traditional” marks could be registered.

‘Traditional trademarks’ include word and design marks.  Non-traditional trademarks, on the other hand, include the following:

  • sounds;
  • scents;
  • tastes;
  • textures;
  • colours;
  • holograms;
  • moving images;
  • three-dimensional shapes;
  • modes of packaging goods; and
  • the positioning of signs.  

All these traditional and non-traditional marks, as well as combinations of non-traditional marks, can be registered in Canada. 

Limitations of Non-Traditional Trademarks

While non-traditional trademarks can provide great advantages for many businesses, they also have some specific requirements and potential drawbacks.  Future applicants should be aware of these requirements and drawbacks before considering filing an application for a non-traditional trademark:

  • Functionality:  Not all types of non-traditional marks can be registered with all types of products or services.  A trademark is not eligible for registration if the mark has a utilitarian function in relation to the associated products or services.  This means, for example, that a lavender scent cannot be registered as a trademark of a scent-product, such as perfume or air freshener.  Similarly, a colour cannot be registered as a trademark of a ‘colour-product’, such as paint or crayons.  However, a lavender scent could be registered as a trademark for paint or crayons and colour could be registered as a trademark for perfume or air freshener.
  • Distinctiveness:  Before filing an application for a non-traditional trademark, the mark must be “distinctive” in association with the relevant products or services in Canada.   A mark is considered distinctive if it is sufficiently well known in connection with the products and/or services such that consumers associate that mark with those products and/or services.  If you are considering applying for a non-traditional trademark, you should ensure that you begin using the mark well in advance to allow the mark time to acquire distinctiveness.

Examples of Applications for Non-Traditional Trademarks

To help you think creatively about whether a non-traditional trademark is something you might wish to apply for, below are a few examples of current Canadian applications:

Registering Non-Traditional Trademarks

Non-traditional marks, being fairly new to Canada, are still uncommon.  If you have a colour, scent, sound, or other mark worth protecting, this is an excellent opportunity to apply for registration, before other potentially confusing applications are entered on the Register.  For more information on registering trademarks, please contact our experts at Brion Raffoul LLP.

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